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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Serge Kovalev

Case No. D2005-0584

 

1. The Parties

The Complainant is Microsoft Corporation, Washington, United States of America, represented by Martin B. Schwimmer, United States of America.

The Respondent is Serge Kovalev, Moscow, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <ms-search.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2005. On June 7, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 9, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 9, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on August 2, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant manufactures, markets and sells computer software and related products and services, including computer program manuals and documentation, under its famous MS trademark, among others. Since its inception in 1975, Complainant has created software and developed services for use in education, the workplace, and the home.

Complainant’s products and services include computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce services, and computer publications.

Complainant offers these goods and services to the public under the federally registered trademark “MS” (“MS”). The United States Patent and Trademark Office (“USPTO”) has granted federal trademark registrations for the MS mark, including the following:

Mark

International Class

Registration No.

Registration Date

MS

9

1,303,495

November 6, 1984

MS

16

1,333,178

April 30, 1985

MS-DOS

9

1,315,570

January 22, 1988

MS-DOS

16

1,314,584

January 15, 1985

Complainant also provides numerous forms of information services under its MSN trademark, including information services via its MSN Network.

The United States Patent and Trademark Office (“USPTO”) has granted federal trademark registrations for the MSN mark in numerous classes of goods and services, including the following:

Mark

International Class

Registration No.

Registration Date

MSN

25

2,498,608

October 16, 2001

MSN

16

2,751,320

August 12, 2003

MSN

16

2,459,987

June 12, 2001

MSN

9

2,608,310

August 13, 2002

These registrations were all obtained prior to registration of the Disputed Domain Name.

 

5. Parties’ Contentions

A. The Complainant assert the following:

Complainant’s rights in its MS Mark.

Complainant has spent substantial time, effort and money advertising and promoting the MS mark throughout the world. As a result, the MS mark has become distinctive and well known, and Complainant has developed goodwill in the mark.

Because Complainant has registered rights in the MS mark, and because the public recognizes MS as an abbreviation for Microsoft, Complainant owns a family of marks consisting of product names such as MS DOS, MS OFFICE, MS OUTLOOK, MS EXCEL, and MS POWERPOINT. When using these names as search terms using the Google Search Engine, all or virtually all results refer to Complainant’s products.

In connection with the MSN mark, Complainant has established Internet websites located at domain names comprised of the MSN mark, including <msn.com> and <msn.net> (collectively, the “MSN Websites”). The MSN Websites allow computer users throughout the world to access information regarding Microsoft and its products and services and to use and enjoy the Internet services provided by Microsoft.

Complainant also makes exclusive use of the trademark MSN SEARCH. Attached as Exhibit 6 to the Complaint are print-outs of various promotional materials maintained by Complainant at “search.msn.com” and on other sites depicting common law use of the mark MSN SEARCH in relation to Complainant’s provision of search engine services.

The MSN mark is closely identified with search engine services.

Complainant notes the Respondent’s whois info indicates that he is located in Russia. Complainant points out that registrant’s registrar is located in the United States of America, the server is located in the United States, the website on registrant’s landing page is in English, and all the majority of the content (specifically the advertisers and featured links) appear to be United States in origin.

Complainant notes that its rights are extended into Russia. It utilizes its marks in Russia; it maintains trademark registrations in Russia; and its marks have been deemed to be world famous.

The disputed domain name is confusingly similar to the MS and MSN Marks

The disputed domain name <ms-search.com> is confusingly similar to Complainant’s registered MS, MSN and MSN SEARCH marks. These marks were adopted and became famous long prior to the creation date of the disputed domain name. Courts and administrative panels have recognized that consumers expect to find a trademark owner on the Internet at a domain name address comprised of the company’s name or mark.

MS-SEARCH.COM incorporates Complainant’s MS mark, with the simple addition of the descriptive term SEARCH. Further, Complainant is frequently referred to as MS in the press. The addition of a descriptive term such as SEARCH and the generic term “.com” to the protected MSN mark is “insufficient to avoid confusion with the registered trademark”.

The disputed domain name is confusingly similar in appearance, sound, and commercial impression to the MSN mark. Combined with Complainant’s reputation for providing search services through its MSN network, there is no doubt that users will be confused by Respondent’s <ms-search.com> domain name.

Moreover, MS-SEARCH is an obvious typographical mistake of MSN SEARCH. Respondent, by virtue of registering and using a domain name that incorporate the entirety of the MS SEARCH mark with the mere subtraction of one letter, which, not coincidentally, replicates another of Complainant’s marks, has engaged in “typo-squatting”, or “typo-piracy”.

The fame of the MS and MSN Marks only exacerbates this confusion.

A Google search of the term MS-SEARCH reveals that, whether a mis-typed reference to the MSN Search engine of Microsoft or use of MS as shorthand to refer to Microsoft, the term signifies Complainant and its services.

The search also retrieves what appear to be references to Respondent’s web address by a number of sites, which identify MS SEARCH as hard-to-remove adware, further tarnishing Complainant’s reputation.

The MS portion of the disputed domain name is not a recognized English word or phrase and the only words or terms similar to the disputed domain name are in fact Complainant’s MS, MSN and MSN SEARCH marks.

Respondent has no legitimate interest or rights in the disputed domain name

Respondent has no legitimate interest in the disputed domain name. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, from Complainant to use the MS, MSN or MSN SEARCH marks in a domain name or in any other manner. When Complainant advised Respondent of its rights, Respondent did not respond.

To the best of Complainant’s knowledge, Respondent does not and cannot own legitimate trading name or trademarks incorporating either the MS, MSN or MSN SEARCH marks or the MS SEARCH misspelling thereof in the disputed domain name. Nor, upon information and belief, is Respondent engaged in any legitimate business selling or otherwise relating to Complainant’s products or services sold, provided or distributed under the MS, MSN or MSN SEARCH marks. Complainant is not aware of the use of MS SEARCH by any other entity (and would protest any such use as being infringing or dilutive of the MS, MSN and MSN SEARCH marks).

When Complainant learned of Respondent, Respondent was using <ms-search.com> as a so-called “Global Search Engine”. Thus, Respondent is used the disputed domain name to compete directly with Complainant.

Furthermore, Respondent’s web page utilized a logo form for MS SEARCH that reproduces the font used in Microsoft’s famous logo.

Moreover, as noted above, Respondent is apparently distributing “adware” or otherwise insinuating itself into users’ computers without consent.

Respondent is presently using the name to promote <SecurityiGuard.com> and <DialeriBlocker.com>. Both programs proport to be anti-spyware programs, and thus are competitive with programs distributed by Complainant.

In short, Respondent is not making a legitimate use of the MS-SEARCH name.

Respondent registered and used the disputed domain name in bad faith.

Respondent’s bad faith is manifested in several ways. Respondent has registered the disputed domain name in bad faith by doing so with knowledge of Complainant’s rights in the well-known MS, MSN and MSN SEARCH marks and the obvious similarity between these marks and the <ms-search.com> domain name. It is simply inconceivable that Respondent was unaware of Complainant and its rights in its Marks, which, as noted above, have achieved worldwide fame.

The fame and reputation of a complainant’s mark is persuasive in determining a Respondent’s bad faith intent.

Respondent’s activities indubitably constitute unlawful typo-squatting.

Respondent’s use of a Complainant’s logo typeface, as well as its dissemination of adware, constitutes further evidence of bad faith.

By using Complainant’s marks, or variants thereof, to divert customers from Complainant’s site to Respondent’s apparently competitive services, Respondent has clearly registered and is using the disputed domain name in bad faith.

Requested relief

Complainant requests that the Panel issue an order transferring the registration for the disputed domain name from Respondent to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or confusingly similar

The disputed domain name is not identical to Complainant’s trademarks MS, MSN or MSN SEARCH, and the question is thus whether there is a confusing similarity between one or more of the Complainant’s trademarks, and the disputed domain name.

The disputed domain name incorporates Complainant’s MS trademark. In the context of Information Technology services or products, this trademark is recognized by the public as an abbreviation of Microsoft.

The Panel finds that the disputed domain name suggests to most users of Internet that it is connected to an Internet website owned, controlled or endorsed by Complainant, which is not true.

The addition of the descriptive term “-search” to the mark MS is not sufficient to avoid confusion with the Complainant’s trademark MS. Reference is made to Revlon Consumer Products Corporation v. Laurent D. Morel, WIPO Case No. D2002-0215, holding that the “neutral” addition of “girls” in the <revlongirls.com> domain name did not overcome the domain name’s confusing similarity with the Revlon mark.

The Panel finds that in this case, the addition of the descriptive term “search” actually will contribute to the confusion, as it is well known that Complainant offer Internet search services.

The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s trademark MS. The Panel does not find it necessary to determine whether the disputed domain name also is confusingly similar to the MSN or the MSN SEARCH trademarks.

B. Rights or legitimate interests

Complainant has informed that Respondent has no connection or affiliation with Complainant, and has not received any license or consents, express or implied, to use the MS mark. If such connection, affiliation or consent existed, it would be easy for Respondent to substantiate this. Respondent has however not contested any of Complainant’s assertions.

As a result, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name, as there is no evidence allowing the Panel to conclude that any circumstances listed at paragraph 4(c) of the ICANN Policy apply to Respondent’s situation.

Complainant has provided evidence that Respondent has directed the domain name at issue to an Internet website offering competing products. The Panel finds it unlikely that Respondent would have any rights or legitimate interests in the use of a domain name that is confusingly similar to Complainant’s trademark in connection to the offering of such products.

For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and used in bad faith

Complainant’s trademark MS is recognized by the public as an abbreviation of Microsoft. MS must be regarded as a world famous trademark.

The Panel finds it significant, that Respondent’s web page with the disputed domain name previously utilized a logo form for MS-Search that reproduced the font used in Complainant’s famous logo.

Seen together with other facts of the case, this shows that Respondent was aware of the MS trademark, and the fact that Complainant is the owner of the MS trademark.

The offering of a search engine, in competition with Complainant’s search services, is an indication that Respondent in bad faith has used the disputed domain name and Complainant’s trademark, to attract business. Respondent continues to use the disputed domain name to market software in competition with Complainant, which is further indication of use in bad faith.

Respondent’s registration and use of the domain name at issue appears to be an intentional attempt to capitalize upon a likely confusion with Complainant’s trademark MS.

For the above reasons, the Panel concludes that the Respondent has registered and used the domain name at issue in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ms-search.com> be transferred to the Complainant.


Peter G. Nitter
Sole Panelist

Dated: August 17, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0584.html

 

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